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Published: Tuesday, 8/16/2011

Overhaul of patent process likely

Critics worry 1st-to-file system could hurt small firms, inventors

BY ALISON GRISWOLD
BLOCK NEWS ALLIANCE

The race to patent new inventions and intellectual property may soon follow different rules in the wake of the first overhaul of the nation's patent process in more than 50 years.

The U.S. House of Representatives passed legislation in late June that would have the United States award patents to the "first to file," rather than the "first to invent."

Although the bill would overhaul the nation's patent process and would bring the United States into line with other countries that use first-to-file systems, critics worry the new guidelines could present disadvantages to small businesses and inventors.

Granting patents on a first-to-file basis would give companies a new sense of urgency about their patent decisions, said Tim Fogarty, director of energy programs at Innovation Works, a program that invests Pennsylvania state money in start-up companies.

For small companies in particular, he said, that added pressure could compel the organization to incur expenses earlier and allocate precious capital toward intellectual property defense.

Nonprovisional applications establish the filing date of a patent application and begin the formal examination process. These applications can range in cost from a few thousand dollars to $25,000 or $35,000, said Julie Meder, an intellectual property lawyer in Pittsburgh. Most of that money goes to legal fees, she added.

Provisional applications, on the other hand, establish the filing date of an application without entering the patent into the examination process, making it a "patent pending."

These applications expire after a year but can cost as little as several hundred dollars and offer a cheaper option to small companies and inventors not ready to file for a formal patent.

Should the new bill become law, Ms. Meder said, she expects the number of provisional patent applications will rise as companies with limited resources feel pressured to file for patents sooner and more frequently.

Proponents of the bill say that it will improve patent quality and help all inventors.

It should also simplify the process for parties filing patents in multiple countries, as each application would fall under the first-to-file umbrella.

In addition to redefining the basis for granting patents, the legislation would alter the patent review process to let third parties submit information on other parties' applications. Like the current process, the new one would give inventors a 12-month grace period between publicly disclosing inventions and filing for patents -- a critical concern for universities, where professors often publish their work before handling the patent process.

While the bill has yet to be signed into law, its prospects look good. The legislation has bipartisan backing and the Senate passed a similar measure in March. The White House has signaled its support for the overhaul.

The Block News Alliance consists of The Blade and the Pittsburgh Post-Gazette. Alison Griswold is a reporter for the Post-Gazette.



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